Tata Sons Limited vs Mr. Atul Tiwari & Anr.
2012 Latest Caselaw 2875 Del

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*IN THE HIGH COURT OF DELHI AT NEW DELHI

+      CS(OS) 1767/2009

                                            Decided on 1st May, 2012

       TATA SONS LIMITED                            ..... Plaintiff
                    Through             :Mr. Pravin Anand, Adv.

                    versus

       MR. ATUL TIWARI & ANR.            ..... Defendants
                    Through   : Ex-parte

       Coram:

HON'BLE MR. JUSTICE A.K. PATHAK

A.K. PATHAK, J. (ORAL)

1. Plaintiff has filed the present suit for permanent injunction

for restraining the defendants from infringing the registered

trademark of plaintiff, passing off, damages, rendition of accounts,

delivery up etc. Plaintiff has filed this suit through its constituted

attorney Mr. V. Gurumoorthi.

2. It is alleged that plaintiff was established in the year 1917 as

a body corporate. Plaintiff is a principal investment holding

company of the "Tata Group", which is India's oldest, largest and

best known conglomerate with turnover of over `251,543.00 crores

during the financial year 2007-08. Plaintiff is one of India's most

trusted business houses and the name as well as trademark

"TATA", which is derived from the surname of the founder

Jamsetji Nusserwanji Tata, is a household name synonymous with

excellence in almost every field of business activity. Since its

inception in the year 1917, plaintiff has been continuously and

consistently using the trademark and trade name "TATA" which is

a rare patronymic name possessing the distinctiveness of an

invented word for its own business activities and those of

companies promoted by it. The use of trademark and trade name

"TATA" by the plaintiff's predecessors in business relates back to

1868. The trade name "TATA" has consistently been associated

with conglomeration of companies forming the "TATA Group",

colloquially also referred to as the "House of TATA", which

consists over hundred companies of which over 50 companies use

mark "TATA" as key and essential part of their corporate name.

3. Plaintiff, being proprietor of trademark "TATA", enjoys

exclusive rights in the said trademark and is entitled to take action

against unauthorized use thereof by any third party for its goods or

services. Plaintiff has international presence. Plaintiff as well as

its sister concerns are proprietors of several trademarks comprising

of or containing the word "TATA", which have been registered

under Classes 3 and 9. Details of the registration have been

mentioned in para 8 of the plaint.

4. Plaintiff has alleged that defendant no. 1, Mr. Atul Tiwari is

proprietor of M/s. Bihar Battery located at Patna. Defendant no. 2

Mr. Bablu Tiwari is the proprietor of M/s. Gold Battery. In the

month of July, 2009, plaintiff received information regarding

availability of counterfeit Tata batteries in Patna. Services of

professional Investigator were engaged on 20th August, 2009.

Investigator visited Kankarbagh Area in Patna and noticed

defendants indulging in selling of counterfeit batteries bearing

mark and logo of "TATA". Investigator even purchased sample

batteries from the defendant no. 1 against a cash memo. He also

collected original business cards of the defendant nos. 1 and 2.

Various other shops were also found dealing in batteries bearing

the trade name "TATA".

5. Plaintiff's case is that the use of plaintiff's trade mark/ name

"TATA" by the defendants on the batteries was sufficient to create

confusion and deception in the minds of purchasing public and

members of trade being misled in purchasing such counterfeit

batteries taking it to be that of plaintiff, inasmuch as, this will also

tarnish the image of plaintiff. Act of the defendants in using the

trade name "TATA" also amounts to infringement of mark of the

plaintiff.

6. While issuing summons to the defendants, Court also

appointed a Local Commissioner with the direction to visit the

premises of defendant nos. 1 and 2 and to make an inventory of

infringing goods bearing the trade name "TATA" or any other

mark deceptively similar to that of the plaintiff's trademark and

thereafter to take into custody all the products, labels, stationery,

blocks, dies, packaging material, cartons, literature and all printed

matter bearing the impugned trademark "TATA". Local

Commissioner was directed to seal all the materials containing the

infringing products of the plaintiff and to release the same to the

defendants or their representative, on superdari. Pursuant to the

said order, Local Commissioner visited the said premises of

defendants. As regards defendant no. 1, 46 batteries bearing

trademark "TATA" were found in his shop. Same were sealed by

the Local Commissioner and handed over to defendant no. 1 on

superdari. Premises of defendant no.2 was found locked.

7. Despite service, defendants did not enter appearance in court

and have been proceeded against ex-parte. Defendant no. 1 was

proceeded against ex-parte on 18th November, 2009; whereas

defendant no. 2 was proceeded against ex-parte on 7th March, 2011.

8. Plaintiff has led ex-parte evidence. Plaintiff has examined

PW1 Mr. V. Gurumoorthi as its witness, who has tendered his

affidavit in evidence. PW1 has corroborated the averments made

in the plaint, which have been reproduced in the preceding paras

hereinabove. He has also proved the documents. Power of

Attorney and the Board Resolution has been proved as Ex. PW1/1

and Ex. PW1/2. Certificate of incorporation of the plaintiff has

been proved as Ex. PW1/3. Original receipt issued by the

Municipal Corporation of Delhi has been proved as Ex. PW1/4.

Copy of ledger book maintain by Tata Services Ltd. has been

proved as Ex. PW1/5. Write-up dated 24th May, 2009 titled "T for

trust" appearing in "The Week" magazine, wherein plaintiff has

been acknowledged as world's 11th most reputed companies has

been proved as Ex. PW1/6. List of well-known trademarks issued

by the Controller General of Patents, Designs and Trade Marks

acknowledging the plaintiff's trademarks "TATA" and the "T

within a circle device", has been proved as Ex. PW1/7. Computer

generated print-outs have been proved as Ex. PW 1/16 and PW

1/17. Original affidavit of the Investigator has been proved as Ex.

PW1/19. Photographs of the sample batteries purchased from M/s.

Bihar Battery have been proved as Ex. PW1/20. Original cash

memo dated 2nd August, 2009 issued by M/s. Bihar Battery has

been proved as Ex. PW1/21. Business card of M/s. Bihar Battery

has been proved as Ex. PW1/22. Business card of M/s. Gold

Battery has been proved as Ex. PW1/23. Report of the Local

Commissioner has been proved as Ex. PW1/25.

9. I have heard the counsel for plaintiff and have perused entire

material on record and am satisfied that the plaintiff has succeeded

in proving that it is the proprietor of registered trademark "TATA".

In CS (OS) No. 1922/2003 titled Tata Sons Limited vs. Suresh Jain

and Ors. decided on 14th September, 2004 a Single Judge of this

Court has observed that the trademark "TATA" has become

household name not only in India but throughout the world,

therefore, it is well-known trade mark as contemplated under The

Trademark Act, 1999 ("the Act", for short). In CS (OS) No.

842/2002 titled Tata Sons Limited vs. A.K. Chaudhary & Anr.

decided on 6th April, 2009 it has been observed that "TATA" is

well-known trademark within the meaning of Section 2(zg) of the

Act on account of its distinctiveness and residual reputation and

cannot be appropriated by any party in India in relation to any

merchandise goods/services/trade name.

10. Section 29(1) of the Act envisages that a registered

trademark is infringed by a person who, is neither a registered

proprietor nor has permission to use the trademark, uses such trade

mark in the course of trade, a mark which is identical with, or

deceptively similar to the registered trade mark in relation to goods

or services in respect of which the trade mark is registered and in

such manner as to render the use of the mark likely to be taken as

being used as a trade mark. Subsection 2 of Section 29 of the Act

further provides that a registered trademark is infringed by a

person, who is neither a registered proprietor nor has permission to

use mark, in the course of its trade uses the same, which because of

its identity with the registered trade mark and the similarity of the

goods or services covered by such registered trade mark or its

similarity to the registered trade mark and the identity or similarity

of the goods or services covered by such registered trade mark or

its identity with the registered trade mark and the identity of the

goods or services covered by such registered trade mark, is likely

to cause confusion on the part of the public, or which is likely to

have an association with the registered trade mark. Since the

trademark "TATA" is a well-known trademark, thus, the use of

aforesaid mark by the defendants on the products being sold by

them will constitute infringement within the meaning of Section 29

(4) of the Act.

11. Plaintiff by leading sufficient evidence has succeeded in

proving that defendants are using mark "TATA", inasmuch,

material seized by the Local Commissioner also supports this fact

as the batteries had been seized from the shop of defendant no. 1.

Defendants have also not come forward to controvert the evidence

led by the plaintiff, inasmuch as, have chosen not to contest the

matter. In my view, the plaintiff has succeeded in proving that the

defendants are using trademark "TATA" on the batteries and this

act of theirs, amounts to infringement of the trademark of the

plaintiff. Thus, plaintiff is entitled to relief of injunction as prayed

for.

12. As regards relief of delivery-up, rendition of accounts and

damages are concerned, sufficient evidence has not been put forth

to show the degree of harm, which has resulted by the use of

impugned mark by the defendants. At the same time, "punitive

damages" can be imposed on the defendants for their action of

infringement of well known trademark of the plaintiff. In Time

Incorporated vs. Lokesh Srivastava, 2005 (30) PTC 3 (Del), it has

been held that the award of compensatory damages to a plaintiff is

aimed at compensating him for the loss suffered by him; whereas

punitive damages are aimed at deterring a wrong doer and the like

minded from indulging in such unlawful activities. It has been

further held that time has come when the Courts dealing actions for

infringement of trademark, copy rights, patents etc. should not only

grant compensatory damages but award punitive damages also,

with a view to discourage and dishearten law breakers, who

indulge in violations with impunity out of lust for money so that

they realize that in case they are caught, they would be liable not

only to reimburse the aggrieved party but would be liable to pay

punitive damages also, which may spell financial disaster for them.

13. In the light of the above discussion, suit of the plaintiff is

decreed in terms of prayer clauses 22(i) and (ii). Punitive damages

of `1 lac each is also awarded against the defendants and in favour

of the plaintiff. Plaintiff shall also be entitled to costs. Decree-

sheet be drawn accordingly.

A.K. PATHAK, J.

MAY 1, 2012 rb